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Patent Office Allows Deferred Payment of Patent Fees

The U.S. Patent and Trademark Office (PTO) recently started a pilot program that allows certain patent applicants to defer payment of certain government fees up to one year. The deferral is intended to give applicants time to decide whether to commercialize any new technology. Since June 8, 1995, the PTO has allowed an applicant to file “provisional patent applications” to save his or her place in the filing timeline, but avoid some of the up-front expense of regular (nonprovisional) patent applications. Provisional applications, for example, do not need formal drawings or “claims” that precisely define the inventive aspects of the idea. As long as a nonprovisional application is filed within one year after the provisional, the common elements of both applications will be treated as if they had been filed on the earlier date. Though the date by which the nonprovisional application must be novel and non-obvious stays the same, the expiration date is counted from the nonprovisionalfiling date, giving the patentee up to one extra year of term at the end of the patent’s life. To be eligible for the new Extended Missing Parts Pilot Program, an application must

  1. be an original nonprovisional utility or plant application filed during the Pilot (currently extending through December 7, 2011),
  2. be accompanied by a certification and request to participate in the Pilot,
  3. directly claim the benefit of a prior nonprovisional application filed within the preceding year, and
  4. not be the subject of a non-publication request. Then, if the application is filed without payment of the government Search and Examination Fees, the PTO will send a Notice to that effect, and the applicant will have 12 months (non-extendable) from the date of the Notice to pay those fees.

Note that other application components (e.g., basic filing fee, declaration of the inventor(s), and text and drawings suitable for publication) that might typically be the subject of a Notice to File Missing Parts are still required by the filing date, but any Notice as to these items will be subject to a two-month deadline. The PTO implemented this Pilot in hope that some applications will not have “taken off” during the additional year, and the applicants will not pay the fee. The application will then be “abandoned” and will be removed from the PTO’s tremendous backlog.  Applicants save, and the PTO’s statistics improve.

If you would like to discuss this and other opportunities to reduce the fees you pay for patent applications, or if you have any other questions about intellectual property and technology law, please contact one of the members of our Corporate and Transactional Practice Group. We would be happy to help you protect the things that make your business unique.



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